Posted
by
timothy
on Sunday February 18, 2001 @05:56PM
from the thinking-things-through dept.

John Malpas writes: "In the process of looking for a job as a Java engineer,
I recently encountered a really hard-edged
employee IP agreement -- one of those agreements that
asks the employee to list all of their "inventions"
as of the date of employment.
The intent of this kind of agreement seems to be to let
software ideas into the company, but not
to let them out. In the language of the agreement,
if I improved one of my "inventions" while working
for the company, they would have all rights
to the improved "invention," and I would have none.
In this case, I chose to try to negotiate a
more reasonable IP agreement with the company.
Finally, the company was unwilling to modify
their agreement, and I was unwilling to sign it." Read on for more -- it may help you avoid the same hasssles John faced.

"There are many articles that suggest that it is unlikely that the company would ever try to enforce its IP agreement, much less succeed. But I was not comfortable entering a situation where the company might in the future claim exclusive rights to one of my "inventions," and prevent me from using it somewhere else.

When it came right down to it, my list of "inventions" looked pretty meager. These "inventions" are not really inventions at all, but rather extensions and adaptations of publicly available software. Using the word "invention" to refer to such extensions is unfortunate; it is an attempt to impose an ownership structure onto software ideas, and contradicts my experience of how software development really works. For the full story, see The Employee IP Agreement."

John kept careful track of his thoughts (and a lot of emails, phone calls and in-person meetings) while he sought to forge an IP agreement that he'd hoped would be workable for him and his client. It's a sobering story, so be thankful he's put it to writing. 1/3 warning, 2/3 good advice.

My very nice programmer husband, who believes that everyone is as honest as he, encountered a very similar (10 page) IP agreement in a recent job offer. Fortunately he brought it home to his sharklike evil wife.

In addition to all of the issues listed above, they included one clause that would allow them to contact any "prospective or future employer" to alert them to the existence of this agreement. In short, allowing them to blackmail my geek if he attempted to leave the company.

Another interesting tactic they used was to have section headers describing "company-owned proprietary information" while the paragraphs were far more general...buried in the small print was a statement to the effect that headers were not to be considered as interpretive of the content. If a document could be said to ooze slime, this one did.

Needless to say, the negotiations went badly and they refused to accept any of our proposed changes.

We were unimpressed with the "everyone here has already signed it" argument, since "everyone there" seemed to be a teenager. We pointed out that if they wanted to hire experience, they should expect it to not blindly sign things. Frankly, I know several gifted teenager coders who would know better than to sign such dreck!

First off if he has prior work that is under the GPL it's beyond the reach of the company.

Not necessarily. If he still owns the copyright, then he can revoke the GPL license of his work and make it owned by the company at any time. However, people are still free to release modifications of previous GPLed versions of the software.

What if you came into the situation where you could use something you may have coded privately, for a company project?

would you re-write it from scratch? that would waste the companies time and money. if the code is available and you choose to waste time re-doing it, you suck that many hours away from the project. I'm sure you're well compensated, right? it sounds like a several thousand dollar fuck you from here.

would you use the version with your name on it? if you brought prior work that you failed to declare earlier, you'd be acting in bad faith. in fact, failing to divulge the work, regardless of your licensing choices, is a bald lie, surely at odds with your IP agreement.

Your opinion is hardly law. maybe they'll never find out, but the fact that you've done this thing makes you a bad employee. I'm sure you have ego and pride enough to ignore this, but the fact remains. It is very likely that you could make a modification to some GPL code, then leave having the PHB's thinking they own the code. half the/. stories on companies fucking up a GPL issue probably stem from the headstrong, myopic egocentrism of certain employees thinking they are somehow exempt from straight up disclosure. I hope you're proud of yourself.

It's worth emphasising the point that skilled Software Engineer's are so much in demand that you can pretty much name your own terms.

So this fact leaves you have a number options, you need to decide if you want the job enough to bother negotiating if not, just walk away and don?t look back. If you do want the position, name your terms and stick to them. If you concede more than you want, it will make you unhappy in the long term and reduce your effectiveness, so everybody losses.

Some have suggested that this could be just an over zealous corporate lawyer but I'd still be concerned that the bad attitude was prevalent at the managerial level, otherwise the onerous nature of the contract would have already been flagged.

As a contractor I've run into this many times. I actually went through the same exact process during Christmas. The problem is we're too passive about this. We let the companies come up with the initial contracts when it should be the other way around. I think the best solution to all this is to have really standard documents. This is what we should do:

Find a lawyer in each state.

Get the lawyers to write NDAs, non-competes, employee agreements, etc. that are fair to both employee and employer.

Publish these documents on the internet and other media.

Educate all hi-tech folks about these documents, start at colleges.

All hi-tech people should carry copies of these documents with them and should insist that companies accept and sign these standard documents and no other.

There is no need to create unions for this, we just need to make the majority of hi-tech folks use these documents and impose them on the hiring companies.

Just because the dweeb behind the video-store counter can't change his company's rules doesn't mean you have to play by them. I've never once had a problem giving a bogus SSN to companies that have no right to it but insist on having it. That includes video stores, cable companies, and even the university I'm attending, which seems to think SSNs make brilliant student ids.

Occasionly you'll find a company that will refuse SSN 123-45-6789 because it's "obviously invalid." It's almost pathetic when they turn around and gladly accept 521-43-9876. Guess it just look better.

Of course, if your SSN is 521-43-9876, then you might want to pick a different number....;-)

Actually his opinion is (more or less) the law. Work you do on your own time is yours, regardless of what the IP agreement claims.

That depends....

It actually depends not just on doing it on company time and with company equipment, but whether it is a "work for hire". (Oh wait: IANAL!) In order to be a work for hire, it must be performed by an "employee" (defined by the true relationship). Many (most?) contractors do not qualify -- no benefits, complete discression how the work is accomplished, etc. Also, the work must be performed according to the direction and specification of the employer "within the scope of the employement". If an accountant is instructed to "keep the books", and does so by developing spreadsheets or programs that accomplish that objective, the accountant owns the code.

I think most managers would have no idea how to respond to an employee helpfully pointing out that "I have some code that solves this problems, I will let you use it for no charge, but it will still be my code.". Answering that would no doubt involve a legal dept. and various meetings of higher-ups in the company. In other words, it would be a pain.

My former company had clauses relating to work once I left the company.

Some of the clauses were
1. The employees are forbidden from working with any clients, competitors etc when they leave the company.
2. The employees are forbidden from joining any other company employing an ex-employee..

Clause 1 obviously meant that I could not work in IT consulting firms once I left the company as any IT consulting company can be seen as a competitor.

I did not agree to these terms and asked for a seperate agreement with these clauses deleted.

Besides this, there was the standard clause which did not allow me to be involved in any job other than with the company..this essentially meant that I could not involve in work during my spare time or after office hours.

Your so focused on the IP issues your missing a
obvious alarm bell that should be going off. Twice
your headhunter mentioned the term "crunch time"
and working weekends and (unpaid) overtime.
It sounds like a sweat shop to me.... and at
less then 100K a year and apparently no ownership,
I'd be walking out of the interview before we even
got to the IP issues.
Your labor is your product... if they want overtime and weekends, great, just pay you
hourly. Get over the "status' of being a salaried
employee, otherwise your better off working at
Home Depot or UPS.
-Jeff

Reading the story provided in the link above, and invention can be anything ranging from a physical entity, to a software toolkit or library. It's quite possible even written works such as how-tos or books could be considered an "invention"

>How would a company enforcing a IP aggrement that was sigined voluntaraily be a violation of civil rights?
>Now, if a company implements a IP policy unilateraly, thats something different. But this was a voluntary matter.

This really isn't a question of whether the document was signed voluntarily. It comes down to whether anyone has the right to ask you to give up your rights? There are some things you are prohibited to sell (drugs, especially dangerous weapons) because allowing them to be sold would damage society as a whole and such matters are transcendant to the internal logic of an agreement (property may be 9 10th of the law but there is still that 1 10th left over). There are also some rights that no one or at least no private individual or company can ask you to give up. We all know that phrase the police use when they arrest someone "you have the right to remain silent (5th ammendment) if you choose to wave that right (by speaking) everything you say etc." The police and other governemnt institutions (for better or for worse) can and do define situations in which you give up your rights either explicitly, as above, or implicitly, as when you commit a crime and you are imprisoned thus "giving up" your right to travel (yes that is a right) your right to property (they confiscate most of the money you earn from work you do there which is why prisoners get payed only a few cents an hour).
Private institutions and individuals do not have the right to ask you to give up many of the rights mentioned above, although they often do. As an example a private company can not give you a contract to sign in which you agree to work below the minimum wage and in most situations cannot do the others things that I've mentioned government institutions can do. There are some notable exceptions to this such as confidentiality agreements which seem to be generally upheld without question, of course those often are in place to protect "intellectual property" which arguably is a right (since the last work is property it *must* be a right, mustn't it?) although there are cases in which confidentiality agreements are used to do something not protected by the constitution (ever see "the insider").
I hope you found this comment valuable.

You state that they *ask* you to do this. That doesn't mean you have to, and the i seriously doubt the consequences of 'lying' in this matter could be any worse than the consequences of telling the truth.

In this day and age, people, companies and especially corporations will screw you over for a dollar any way they can, as long as it appears legal - or if the risk of your winning any lawsuit against them is either a remote or manageable risk.

Tell them you're not willing to hand over IP rights to your existing inventions without a separate licensing agreement, and if they refuse, then theres plenty of other jobs out there.

Ask them to list their inventions, and insist that if you do any work on them in your own time, you gain rights to them.

Obviously in the spirit of the GPL, any updates to GPL code must also be GPL'ed, and therefore, even if you weren't allowed to keep IP rights to changes you made while employed there, the GPL would overrule that anyways and allow the code to continue to be public.

There is one exception though. If the company ONLY used that code for internal use and never released any source or binaries for changes, any changes you make to that code while employed for the company MIGHT be considered company property and therefore could not be used elsewhere. However, this would only hold water until ANY of the code is included in ANY program that is available to the public. Even if they extracted from the GPL'ed program only that code modifications you made while employed there, technically that code would be covered under the GPL even if the original modified program was never made publicly available.

Of course, when you're talking about inventions, this scheme doesn't make a whole lot of sense. The whole point of protecting an "invention" is not to hoarde it in house for only the company at large to use, but to release some executable form to the public to make money and own exclusive rights to that product. Obviously going in with GPL'ed code would almost ensure that any changes you make will be subject to the GPL when you leave. It might not be YOURS, but it will still be GPL'ed.

I've been hit by those things more than once. Got really burned by signing a no-compete with a defense contractor - it could have been a multi-year consulting job I threw away for a few grand. DON'T SIGN YOUR RIGHTS AWAY.

As a contractor, I saw one that actually specified that if you were unable to complete the contract (i.e. 40 hrs/wk for X months) they were entitled to have YOU PAY THEM 125% of your hourly rate for every hour missed!!! I was like "what, are you on crack?" (The contract was to do HTML for the GOP convention in Philly, by the way. I passed.)

Recently I went from contract to employee, and the NDA/non-comete they put in front of me was ridiculous, re. shopping carts, all copyrights, etc. etc. I said hey, my company is older than yours and I've done my own shopping cart stuff before yours existed! Do you really think I'm going to sign this? When they asked for a list of everything I wanted off-limits (Exhibit A), I hit them with about 60 websites, calculator programs, a shopping cart, etc. etc. and sent a copy to my laywer.

Well, it's been a while, but I just now got around to reading this response. ..

There are several things about the question: "Could you get a haircut?".

First, they are indirectly asking you if you'd be willing to conform on little things to the company culture. It can very well be that "Sure, if you really, really want to" is a valid answer, and that actually getting the haircut is not required.

It wasn't posed as a request. I was flat out told that the offer was conditional on my getting a haircut. Saying "No thanks," or "Well, maybe I'll get a little trim," wasn't an option.

I'm told that you'd end up getting the haircut anyway 6 to 12 months later, but that is NOT because your boss asks you to.

You know, the job I ended up taking (where I fit in perfectly) barely has a dress code (they insist that you're dressed), and my long hair did fit in just fine. But I did get the haircut after a few months. That had more to do with moving to the warmer climate though.

He didn't so much have a problem with the part of the contract you are referring to.
He had a problem with the clauses stating that 'any IP you come up with while in the employ of the company belongs to the company', meaning, he can't do anything, anywhere, on his own time without them owning it.

The clause you are referring to does make sense; the company is paying you to write code for them, so you shouldn't be able to add your 'own' previously developed code and then claim they owe you.

I had the same experience, except it happened over a year after I was employed. I basically said "I'm not going to sign a contract that gives you control over any Open Source software that I write", gave them modifications that basically said the same (as well as giving them an unlimited license to use any software I'd written beforehand), and the HR department said "We'll get this approved by the lawyers and get back to you." That was the last I heard of it.

Unfortunately, when you're applying for a new job you don't have that leverage. I was critical to the team producing the company's new product. As a new hire, I probably would not have gotten the same consideration -- they'd probably have tossed my application into the shredder as a "difficult" person. Which I am, if you intend to test my piss or steal my Open Source software, but which I'm not as an employee. (Oh, of course I don't do drugs -- I wouldn't be around if I did drugs -- but my thought is that if you don't trust me when I say that, then why should I trust you?).

OK,
Back when I was starting my own company, I had a client that had a non compete clause about working for competitors. My Lawyer explained that Non-compete clauses are ALMOST non-enforcable

How enforcable a clause is depends on HOW the company treated you, and compensated you. If they claim that your idea was "vital to their business", they had better have 1)Given you a title that refected that, and 2)Compensated you to match. If they missed either one, it is evidence that you were NOT vital.

They also can NOT word a non compete in such a way that
1)Prevents you from working in your field
2)Requires you to move your household

The CAN require you to commute 2 hours or so each way, but if the distance gets so long that you can't make a living - bye bye

Same thing happened to me when offered a job by a very large Silicon Valley unix systems manufacturer (who shall remain nameless).

They had this one paragraph that covered just about every thought I'd have whilst employed by them. I was working on a significant project at the time in my own hours and refused to sign. Their comment was "We thought you might say that, but we thought we'd try it on you anyway"!!!

I got a friend who is a laywer to expand their paragraph into a 10 page document that defined "working for", essentially meaning only when working on jobs under their direction (not just in working hours: what if you work late? and not just in 9-5 hrs: what if you have a sick day and work on your own project at home that day?)

It took two months for them to okay it but they said my final document followed the spirit of their own shorter paragraph anyway.

Certainly in Australia I've known of a case where a company tried to get difficult with an ex-employee (taking an idea he developed in his own time to a new employer) and failed before it even got to court. It just couldn't be proved. I imagine if a *lot* of money was involved things might have gone differently.

I was approached by a recruiter wanting a Senior Unix Systems Administrator for a new e-commerce company. He liked the fact that I also had experience in Cisco and C coding. He claimed I was "very hot for them" (though this may be usual recruiter puffing). I OK'd passing on my resume, and he called back the very next day with "They want to talk to you ASAP, but the CEO is flying in on Friday so we have to schedule then". So I said "OK". He then said "Great, I'll FAX over the NDA to you now, and you can just bring it with you when you go in".

I asked him what was in it (since I didn't have FAX and would have to read it when I arrived) and he said "Oh, the usual stuff, that you won't use any of their ideas". "And what if their ideas are ideas I'm already working with?". "That could be a problem". "Then we'll need to negotiate the terms to protect both parties". "They can't do that, the CEO is there for just one day a week, and they are interviewing a lot of people that day". "Then it sounds like they have no need for me". "But they do, your experience is fantastic". "Sorry, but if they don't care about being fair with my rights, I doubt it will be a place I'll end up staying at, and I might not be able to find employment after I leave if I blindly sign unnegotioated terms".

At that point we politely canceled the interview. But I don't know at this point how the recruiting firm will treat this.

I did interview with another company, which had a special part of the interview where they discussed their coming market strategy. They had a very reasonable NDA to have access to that part, and it was optional. The NDA simply prohibited disclosure of what I would see and hear at that presentation. So not every employer is bad. We need to just avoid those who are.

When the company writes about an invention, they really mean something you can patent or something you have patented. Invention specifically does not mean any idea that came into your pretty little head. Just because you created a program to manage a linked list doesn't qualify it as an invention unless your implementation was sufficiently novel that you could patent it (and then demand license fees from others to use it).

This runs counter to just about everything I've haerd about patents and software. Yes, they do mean any idea that comes into your pretty little head. Just read the reports of what companies sue over.

Ideas are reinvented by people in the IT industry countless times. I bet there are maybe 20 or 30 (probably less) significant, patented ideas in sotware that 50 other people didn't have at the same time, or even long before they were patented.

Every company in the valley here is restricted in its growth by its ability to recruit talent. This is an example of a company that lets its lawyers set policy that prevents them from hiring any engineer who bothers to read what he's supposed to be signing.

There have been many occasions where someone has asked me to sign a contract and declared that it was "standard", and that I should therefore sign it, no questions asked. My reply has been along the lines of: "I don't dispute that it's standard. What I said was, I'm not going to sign it!"

Clauses making the losing party pay legal fees sound even-handed, but they are just another way for big companies to intimidate individuals. The reason: they can afford to bet $250,000 on the lawsuit, but you can't. You might be willing to fight a 50-50 lawsuit and pay your own legal fees, but can you afford not only the risk of losing but also the risk of being wiped out by *their* legal fees?

Anything that increases the dollar amount at risk to both parties increases the leverage of the party with more resources, up to a point. (Once the amount at risk goes far beyond what the smaller party has, the balance of power starts to tip back the other way.) In most cases, individuals are much better off with the standard "everyone pays their own lawyers" rule.

Something that my friends and I have seen happening with alarming regularity is companies waiting until the first day of employment to do all of this paperwork. The intent is clearly to wait until the new employee is committed - he's already quit his previous job and not able to return to it - before springing these restrictive terms on him. Few "permanent" employees can afford to walk away at that point. (Contractors, on the other hand, often can.)

The solution is straightforward - ask for copies of the NDAs and such before accepting any offer. If they hesitate, it's a giant red flag. Ditto any attempt to substitute different agreements for the ones you were given.

There are not an infinite number of employers. There is an even smaller number of employers in any given field or domain. There are even fewer employers in a given field or domain that may be looking for someone of a specific skillset. If there are any externalities - e.g., the job seeker has a family to support in the area or other ties that limit mobility, the number of employers may be limited indeed. If unacceptable practices become industry standards, then one has the choice of not working at that profession, or working as, say, a fry chef. The likelihood that someone is more willing to accept onerous conditions than work as a fry cook, and that the employer only need one qualified individual for any given position, creates no incentive for them not to impose those conditions if they can find that one individual who is willing to accept them.

The myth of the free "labor market" omits the realities of the balance of power between employer and employee. If a critical mass of employers make the abrogation of liberties a prerequisite for employment, and one needs that employment to get by, then, essentially, those liberties do not exist.

If you want to learn more about this topic, I suggest you check out this link: Employer Rights in Employee Inventions [lawnotes.com]. Sometimes seeing what rights they have will help you on your way to learning what rights you have.

This agreement seems fair. Clearly, a company needs to own all of the source code behind their product. They can't worry about a disgruntled ex-employee suddenly demanding that they pay royalties for 'his code' or any other things that might pop up.

Just sit down and write the code from scratch. Even if you're doing basically exactly the same thing you've done before. If you get a job at another company doing the exact same thing, rewrite it from scratch again.

It not only protects the company, it protects you from any ex-employers.

Son of a bitch. If you don't want your "inventions" owned by a company don't fucking sign them over. Do corporations have rights to your ideas if you sign them over? You're fucking right they do, you're developing your project on their time and with their resources, intellectual and physical. If you want to work on your own stuff or open source software do it at home. If you're using my computer time to go off on your own projects you're suddenly going to find user access restrictions on cc. If you work on something for the company you are an agent of the company and they DO have IP rights to your work; they pay your fucking bills so you ought to be happy with the arrangment. If you want to make your project free work on it on your own time and license it as such that it demands to be kept free (GPL, BSD). If you use an idea you developed whilst working on a similar project you better make sure the free version is a clean room implimentation of it and don't think your boss shouldn't be pissed you incorporated something you worked out on their time into a potentially competing application.

Something I have heard of being done in the past is to convenioently forget to give them the signed document. It gets lost in the shuffle. "HR must have messed up", etc. And if there is any problem, you can say send me a copy of the docs.

HR can be relied on to mess up paper work from time to time, and they assume that it is always in there.

If they are really sharp they'll say "oops, this seems to be missing" and touch bases with you before there is a problem.

1. If he writes it during work hours he WON'T use it in his "own time" projects.

2. And if he writes it in his "own time" the employer has NO RIGHT to it.

I fully support that idea. What you are sugesting is that if I am say a woodworker. (I carve statues,figurines whatever for the company I work for and they sell them) If I go home and over the weekend with my own tools carve out a magnificent work of art and sell on ebay the company ACTUALLY owns it and I should give any earnings to said company. That is BS.

He is NOT being a bad employee because he rewrites something from scratch that he has handy access to because he already did it at home. He doesn't want the company owning the original version (which is HIS IP). Hey if a company told me yeah bring in the old stuff you did and it'll stay your IP I bet he would. The problem is a lot of companies seem to think they own everything you do. Whether its on their time (where they are right in thinking so) or if you do it on your own time. (In which case they can kiss my arse because it's MINE noth theirs, as long as I have not stollen or used anything that's their IP)

- Imagine being not able to write java, perl or xml because they aren't part of the union
contract of approved languages. The union folks contracted for object-orient cobol
and are opposed to union members from being forced to work outside their training.
(oh yeah, who gets training on the new stuff is strictly based on seniority)

- Imagine that you aren't allowed to debug code because you are a programmer (not a debugger)

- Imagine that you aren't allowed to program because you are a debugger

- Imagine having to work for 3 years as a debugger before being allowed to program
(regardless of your ability, remember seniority rules)

- Imagine that you know the bozo that sits next to you that can't tie his shoes gets
paid the same amount that you are paid

- Imagine that layoffs are strictly by senority

- Imagine that going to school to get your MSCE gets a person an automatic $30k/year raise

- Imagine that one day you fix a bug in someone elses code and two days later, you find
that your change is backed out by the union rep and you're on report for doing
someone-else's job.

- Imagine paying 5% of your salary to the union

- Imagine that your union rep gets paid more than you

- Imagine being forced to go on strike when you have a morgage to pay and you think the
union is being silly.

I've been wishing someone would articulate this for a long time. People always talk about 'if you don't like it, go elsewhere' in many fields -- doing business as a customer and as an employee. It is so true though that if enough entities begin to require something, there is no alternative. Take SSN's: If all movie rental places required SSN's for their application, although you don't *have* to do business with them, there is no place else to go. Starting your own movie chain may not be an option since the movie houses (may, hypothetically) refuse to do business with a chain of less-than X size. Or perhaps they require databases with SSNs in them, and since they are the content providers... you're screwed.

If all employers collude, even if unknowingly (HR dept. reads in a trade magazine how it is 'industry standard' to requre agreement X) there is no real alternative. That is where the 'little people' have to invoke their collective power through the government to force the 'big people' (corps) hand.

Okay. The company that I currently work for is somewhat (well, try amazingly) disorganized. However, the work is very cool and the people that I work with are great. Once I was hired on, I was required to attend an orientation class and was told to 'bring my acceptance letter' when I came.

Of course, the orientation class was run by the HR department, and once everyone showed up everyone was presented with contracts that included clauses mentioned in the article. We were told to 'initial each page' to show that we agreed with it, and then sign the contract.

What did I do? I didn't initial the page that had the nonsense about them owning my inventions. I crossed the entire section out. When I was done, I handed it to the HR chick and that was that. I've been working here for the last year with no problems, and the minute someone comes barking at me about my 'inventions', I'll just point out the contract that I signed with them.

Does this protect me from getting fired if they don't like it? Probably not. But I have a feeling that they won't have any rights to my ideas, either.

I many not be able to eat principles, but at least I'll go hungry knowing that I stood up for what I believe is right.

It's hard to tell without seeing the agreement itself (can you post it, or did you have to sign an NDA just to see the contract? heh), but the ones I've been asked to sign in the past were actually designed to protect both the company and myself.

Here's how: the first part is the prior inventions section. The fine print said I was to specify those there because then they would be immune to being signed over to the company. Did this agreement actually ask you to sign over stuff you'd invented before working there? If so, run screaming!

The reason that clause was necessary is because it was immediately followed by the "Assignment of Inventions" clause. This is the part where you say that "anything you invent during your term with Employer you do hereby assign all rights thereof unto them," or whatever the proper legal-ese is. This makes sense, really; if you do some applications programming and they pay you, they don't want you to run off with the source saying "I wrote it, so it's mine!" That would cause all kinds of headaches when you leave.

And, on my contracts, there has always been a catch after the "Assignment of Inventions" clause that says things you do off the clock and with your own equipment don't count - ie, if you're working on an open-source widget in your spare time, the company can't touch it, as long as you don't use company equipment or time. Did your contract have one of those?

These things seem pretty standard to me - I've run into them all 3 times I've really read my contract closely. Read it again. If the company really is trying to take stuff they don't deserve, you were right to run; but many times it's a mutual ass-covering thing.

That is both naive and ideological of you. If you have no viable alternatives, and you don't have capital, or even, god forbid, that you are merely adequate at what you do (most people are not usually in extraordinarily-in-demand positions, and by definition most people are average), you should still not have to submit to onerous conditions.

Out of college I hired into a large chip vendor. I was asked to list my 'works' and any thing I developed while I was there was theirs (there was no 'own time'.

I listed a 3-D ascii realtime role playing game I'd developed in college as my only work. (it was the early 80's, pre-PC.

Two years later -- my game had become fairly popular in the company. Word reach a speech recognition group who asked me to add speech recognition to the game. They thought it would make a great demo of their voice technology. I complied -- was fun to issue voice commands to fight, throw spells, walk,

The group was going to license my game from me for their demos -- no prob, but it hit legal and my management. They didn't want me being paid out-of-band for extra work. They tried to push the issue saying it belonged to the company, but they had to check the HR forms (which I still had a copy of as well).

There was my proof. My management forbade the other group having any more dealings with me and the project was cancelled.

Later on, I spent alot of side time developing a screen editor -- added alot of useful features for programmers (went around in my peer groups asking for things they wanted it to do). I got called on the carpet because customers started asking for it -- SE's got it from our internal sneaker net and gave it under the sly to customers. It was about 900% faster than the previous generation as well. Of course I had nothing to do with the distribution, but I was blamed. When I asked for the project officially to productize it, I was told I wasn't senior enough. After that I left the company.

The company later released the editor (on the PC as well) as the "Programmer's Editor" feature unchanged.

Real braindead management though a very profitable CPU company now...:-/

His code are extensions on GPL'd code. Yeah. The GPL is not magic. It does not declare code free. Code is copyrighted by the author, the GPL is a possible license.

Note: IANAL, but I have read the GPL and read some case law on copyrights and licenses.

He owns his extensions. The company is suggesting that they become their property (if he works on them while there). If he agrees, then they own his extensions. They can release them under the GPL or not. He has NO say.

However, they cannot build a derivative work (the GPL code + his extensions) and distribute it without meeting the requirements of the GPL. However, they can do WHATEVER they want with his extensions, including keeping them proprietary. The combination of GPL code + his extensions is a derivative work to the GPL code. His extensions are NOT a derivative work, they are an original work.

There is no magic to the GPL that says you must do something. If I take MS code, slap a GPL on it, and release it, it isn't GPL because the license has no meaning, I don't own the work.

In this scenario, the code becomes Company X code (again, assuming he improves it while there), who can release it or not under any license.

But he already released it under the GPL? Irrelevant. Those that have already obtained the code under the GPL from him are able to use it (and redistribute), but he could not. The GPL isn't magic, it is a way of licensing software.

You CAN reclose GPL code, but the code released under the GPL already is floating around under the GPL. However, if he signs it over to the company, who prohibits him from releasing it under the GPL, he can't release it, he doesn't own it.

Now it would be interesting for him to further relicense that code from a third party (under the GPL), but I'm not convinced that that would work given that he signed away all rights to it. However, if people haven't maintained copies with the licenses, he is SOL, because the company's version is no longer GPL'd.

Just because you release your code as GPL doesn't mean it always has to be GPL. The copyright holder can always release new versions under different licenses, even ones that are not compatible with the GPL.

The core issue is that some companies claim copyright to works you do while under their employ. Thus, if you add features to a product you GPLed, but you own the copyright for...well, if the company manages to snake the copyright from you, the GPL aspect of it makes no difference on further releases. They can't "pull back" the old releases, but they can issue new released under any crazy license they want, closed source or open.

The way this would work, I guess (and I'm not necessarily advocating this way to go, IMO you should just refuse to work for a company that has these policies) is if you assigned the copyright to the FSF. In this case you know the code will remain GPLed, but you no longer control the copyright and thus the employer cannot take it from you. Of course, to be legal you need to finalize all this before working for the company.

A couple of places I have contracted for tried to put clauses in my NDA/non-comp agreement that basically said that if they sued me to enforce the agreement I would have to pay their legal expenses incurred by them in suing me. What my lawyer advised me was to change such clauses to read that the "prevailing party" would be entitled to recover reasonable legal expenses from the losing party. So essentially, this took a very bad clause that would have been detrimental to me (they could sue me on a whim and I would have to pay for it) into something which protected me doubly from frivolous lawsuits (because if their case isn't solid they would stand to lose a good chunk of money reimbursing me).

I just wanted to throw this idea out because I think that there are plenty of "standard" clauses like this which are bad for contractors, and it helps to have a good response in your arsenal to turn it around into a positive. If we have enough people in the industry insisting on reasonable terms, companies won't be able to ignore us because _we_ will then be setting the standard terms by our shear numbers. Besides, if a company doesn't agree to the change that I mentioned above it should be a pretty big warning sign - enough to make you walk away.

What if the company provides you with equipment (for example a PC or a Sun Desktop) to use at home. Would they not then be gaining an extra advantage to claim that things you invent on your own time are (likely) done on their equipment?

Many IP agreements are actually impossable to execute faithfully unless you have never had a programming job before, and intend to leave the industry perminantly once the job is over.

Typically, I will agree that the employer has a perminant right to use any code I include in the work for hire. I insist that I have the perminant right to use and license any code I create with the exception of proprietary information, and that I won't relicense the code as a whole (since it is a work for hire).

I will not agree that anything on company time is the company's property. My time and thoughts don't divide perfectly enough for that. I get ideas at odd times, and sometimes get great ideas for one thing while working on another (as most people do).

If anyone questions that, I offer a 'modest proposal' along the lines of: As soon as office hours end for the day, I will cease to have any knowledge of the works for hire. I will go home slightly confused as I won't know who my coworkers are (or that they are my co-workers). I won't remember the code in fornt of me or have any interest in it. Don't bother to call me at home if there is a problem, I won't know you or anything that you're talking about (Besides, by talking to personal time me, you will be divulging your valuable IP for use in my pet projects). You'll just have to wait until the beginning of the next business day when I suddenly remember it all again (and at the same time forget all about my personal projects).

Or, it's kind of radical, I know......We could try to be reasonable?!?

Even if they do remove it for you, you might be working with other people for whom they have not. Even then it could be a very bad situation.

I have to say that I agree 100%. And to make more explicit what I think Skapare was getting at: Even if you get the clause removed from your contract/agreement, it is a huge red sign warning you what type of environment they foster at their company. It is most likely one that puts the employees second, whether in their career development or in their personal lives. Career development can be as simple as getting a fair wage for your work. I once worked for a company where I put in 12 hour days for months. Finally yearly raise time came around and they gave me a couple thousand/year more (keep in mind I was already the lowest paid graduate in my class) and then they proceeded to tell me that if I wanted a raise again next year I'd have to work even harder! Having them be understanding of your personal life is like the difference between telling your manager that you have to take the day off because your child/parent/etc is sick and having them say either, "Can't you find someone else to take care of them?" or "Why are you still here? Go!".

Whenever I see something like the IP clause that the poster described, I just say, "Thanks, but no thanks," and move on. Of course, I'm also the guy that turned down a job offer because they wanted me to get a haircut. I just can't stand to work in any sort of environment that doesn't value the individual.

while not exactly the same thing you're dealing with, i am reminded of a no-compete agreement that was circulating in my company a while back.

basically, our parent company wanted us all to sign a no-compete agreement that basically said we couldn't work in IT after we had left (for one reason or another) said company. It was obviously a career destroyer, and we did have several people leave the company immediately upon seeing this agreement.

what did the rest of us do? exactly what every current employee of every company that wants to screw their employees do - tell them to go screw themselves.

This sounds like a very union-esque concept. and, perhaps, it is. But i can't stress enough the fact that if every employee of a company fails to sign an agreement (to do|not to do) X, then there's nothing the company can do. They can threaten all they want, they may even fire one or two people just to show how sharp their sword is. But, at the end of the day, the company will be forced to scrap the agreement.

I would have advised employees of our friends prospective employer to do the very same. That, combined with a very small influx of new personell might bitchslap the company upside the head and make them realize that their policies are unfair and aren't making them any friends in the software biz.

FluXAfter 16 years, MTV has finally completed its deevolution into the shiny things network

Companies put IP agreements into place to keep what employees work on. If it is too broad, it may not be held to be valid.

But, companies may not realize the trouble they ask for. If they own everything you work on, then they are liable for everything you do. In my case, the WC insurer tried to deny liability claiming that my work was not the sole cause of my tendinitis, but it was from my computer usage at home. If they have the right to take what I work on at home, then they are on the hook for that liablity too. Workers comp. coverage covers for injury that is caused by your work (usually the test is 50% of more contributing).

IP agreements can be enforced, if the company thinks they would profitable enough. As an a example:
Intellectual property or mind control? [bcentral.com]
provides an example where a company tried to sue to force the idea out of the person's head, even though it hadn't been put on paper, or developed. This could come very close to developing works for free. Not signing such IP agreements or requiring companies to modify them, is only self-defence.

Why not just have an agreement saying that what the employee comes up with on his own time is his, and what he does on company time is the companies?

That's normally reasonable, and quite obvious in the case of eg manufacturing industries, but when the job involves intellectual creativity some interesting grey areas could arise...
Example: Your employer sets you to solve problem x. In the pub on Friday night a solution occurs to you... you spend part of the weekend working it out, then develop the idea fully the next week at work. The idea was created by you on your own time... but you wouldn't have thought of it at all if your employer hadn't assigned the problem to you, so who owns the solution?

In this case I think the employer would have a legitimate claim, and in Malpas case they didn't, but the line between your time and the companies time is not always clear-cut... particularly as one of the arguments managers, consultants, and probably every other well-paid professional uses to justify their large salaries is that they don't work nine-to-five but are willing to take their work home with them. Probably a better division is between 'working on the employer's projects' and 'working in your free time on projects in an unrelated field'

Intellectual property agreements are written by lawyers to protect the intellectual property of a company. Intellectual property is defined as patents, copyrights and trade secrets. This agreement was about patents. Patents protect inventions or improvements to inventions, and were created to deal with hardware, not software. When the company writes about an invention, they really mean something you can patent or something you have patented. Invention specifically does not mean any idea that came into your pretty little head. Just because you created a program to manage a linked list doesn't qualify it as an invention unless your implementation was sufficiently novel that you could patent it (and then demand license fees from others to use it).

Since programming is all about organizing ideas, most programmers tend to view all of their work as invention, but that's really just a figment of our egos. In the context of an intellectual property agreement, invention has a very specific meaning, which is actually good news, because most of your inventions really, probably, aren't inventions -- they qualify as general knowledge of the industry, which is not subject to IP agreements because you need it to ply your trade (which an IP agreement cannot prevent you from doing).

With respect to making an improvement to an invention, granting the company ownership of the improvement does not grant them any rights to the invention. The thing is, the patented improvements usually are things that you can't live without, so the invention becomes useless without the rights to the improvements. (This is called building a patent fence around an invention, and is a common tactic for circumventing the 17-year life of the monopoly of a patent.)

Finally, about whether the employer can own your ideas invented outside of work, there are several states in which that's not allowed by law, but in all the rest, it's part of the voluntary nature of the agreement -- the law says that if you don't like the agreement, don't take the job, because nobody's holding a gun to your head forcing you to work there. (Contrast this with your rights if drafted into military service -- because you have no choice in the matter, you have some extra rights as compared to those you might have as an employee.) The bad news is that you end up with an uncomfortable choice -- feed your family, or sign an odious agreement. The legal terms are something like you are given compensation in consideration for your ideas. This language was originally meant to apply to guys like Thomas Edison, who were prolific inventors (again, software, for the most part, doesn't count as invention), so the company wanted to be able to have the benefit of all the person's ideas, and in exchange, the company would pay a salary, rather than an hourly rate (you have a much stronger argument that your off-work ideas are your own if you are paid by the hour; everything else is considered work for hire, and is considered property of the person hiring you for the job). What I wonder about is, since almost everyone has IP agreements like this, isn't it a collusion among the companies to prevent you from having a choice, so it would be subject to the Sherman Act, but I don't really think anyone would ever be willing to take that case.

If you're really concerned about your IP, your best bet is to be an independent contractor, where you will explicitly transfer your IP to the person hiring you for the term of the contract, and where you explictly license your existing IP to them.

If you're in Colifornia then this agreement would not be binding, according to California Labor Code Section 2870. Basically it states that the invention has to be related to your work at the time on inception.

Complete and utter bulshit. You have missed the most important point: IP Agreement is approved by the board.

The IP Agreement and actually most of the contractual terms for the fist employees in a startup are determined by the VCs and by the board. They are part of the conditions upon which the copany has recieved funding. Noone in the company has the right to change them. If the company you are applying for is a startup you take what you get or leave. C'est la vie. There is no negotiation whatsoever.

And it is least likely to change until the company has receieved additional investment or even gone public.

As a game programmer I would never sign something like this. I'd just find a different job. As for my own code that I might possibly use at a company, I've released it as code, BSD style. (if I'd GPLed it then I couldn't use it in most commerical games). And don't think by GPLing your code you'd force your company to make all their code GPLed. Most contracts I've seen hold you reasponsible for inserting code that you have no right to insert. As you don't have the right to insert GPLed code into non-GPLed code you'd be held liable for the problems it caused getting the GPLed code out.

On the otherhand, I have a friend who is a game designer. He gets paid $100k a year to think up game ideas. For some reason he feels that

(a) if he comes up with a game idea outside of work then it's his
(b) if he comes up with an idea inside of work and they don't decide to implement it he should get the rights too it.

Both are pure bullshit. The whole point is he's getting paid $100k a year for his ideas. That they came up outside of work is irrelavent. I'm hoping this is clear to most of you in this case. Otherwise I think you could see he'd really be short changing his employer.

Think of it this way, if you had a tough programming problem at work and you thought of the solution in the shower at home, following his logic you could charge the company extra money since that idea is "yours". Or, you'd have to come up with a new solution that wasn't related to the solution you thought of on your own time. I think you can all see that would be rediculous.

The question is where to you draw the line. For example another friend started making a website with games on it. He works for a game company. Under California law is that a related field and therefore would belong to the company? I suppose the courts would decide. Fortunately the company he works for is cool and was happy to sign a letter that said he could do this game website and the company would not claim ownership. To bad all companies aren't so reasonable.

From my understanding, 'Trade Secrets' also apply to just about everything (including the things that'd normally be protected under either copyright or patents). Unless I'm mistaken, the Company could just claim misappropriation of trade secrets because of this IP agreement, and quite possibly win. However, the fact of the matter is, most companies aren't using this as a tool to prevent people from moving on to other organizations, but rather just using it as a weapon against ex-employees that are hired by direct competitors.

At my current place of employment, I was asked to sign an agreement that prohibits me from working for any customers or competitors of my current employer, using any and all skills learned during my employment with with said employer, and from divulging any information about my employer or it's partners. Since my employer is a fairly major vendor (in my city) of x86 machines, this agreement could pretty much effectively prevent me from ever being employed again. Since I would assume such an agreement would be practically unenforcable, I signed it. The agreement was not designed by a lawyer (it was far too vague) but rather by an owner of the company who was worried about passwords being distributed outside the company by ex-employees.

(IANAL) The best approach to contract, IP agreement and other legal document negotiations is to simply modify the document to suit your desires. For each stricken section, addition, etc., read over your changes, then initial and date each individual change. Sign the result and send it along. Attempting to negotiate the conditions before negotiating the specific terms is more trouble than it's worth.

Simply making the changes unilaterally puts you in charge of the negotiations in the position of power. Inertia is now in your favour - the easiest thing for them to do is accept you on your terms, provided the terms are reasonable. If they disagree, it's up to them to counterpropose.

Of course, they could always say they're not willing to accept any changes to the terms, but you should not accept such terms unless you're desperate for a job and can't find anything better.

So, let me get this straight. He works his butt off, 1) writing code and 2) improving his "toolkit". He quits or gets laid off or even dies.

Depending on the IP agreement, John could own all his software he wrote at the place, *and* force the company to pay royalties to use the code. This would just about assure 100% job security, and a hefty paycheck to make sure you don't think about quitting...

In short, this little IP spat prevents a programmer from being paid what he's worth, based on his contribution to the company. What benefit does a company offer that offsets the stress of having to worry about intellectual property laws? And why does a programmer have to fight a legal battle alone?

I know this isn't a new topic, but why don't we have a Software Engineer union? We practice a trade that borders on art, where skill is a highly desirable attribute, but where skilled programmers are chased out by unskilled college graduates and foreigners willing to work for much less money. In any other market, this is unthinkable (think about scabs being beat up by striking truckers), so why do we allow it?

(besides the actual physical labor of having to hit somebody repeatedly, which would undoubtedly kill half of us)

The same thing happened to me when I took my present job: They had a boilerplate IP agreement which basically said they owned everything I did, on and off the job. Since I do progamming on the side, this was unacceptable to me.

Instead of signing the agreement, I sat down with the HR director and said I'd only sign it if they changed it to say that I retained rights to anything I did using my own equipment outside of company hours. They ran it thru their lawyer, and a few days later I had an amended version that had the changes I wanted. I didn't raise a huge stink over it, but I did make it known that not making the changes I wanted would be a deal-breaker. I'm glad they did -- it's a great company to work for. It helps that it's a small, family-owned & family-oriented company. If it was a big corporation, I doubt they would have capitulated so easily (but then, if it was a big corporation, I doubt I would have accepted the job offer in the first place)

Remember, everything is negotiable; particuarly in the current job market. If you've got the skills, there's no reason why you shouln't be writing your own ticket. If you don't have the skills, bite the bullet for a year or two until you do. Being a tech professional means that you have to devote a substantial portion of your "free" time building & polishing your skills; if you can't handle this, find another line of work.

I agree with you in general, and I've found that the more demanding you are in looking for a job, the happier you'll be. However, I was offered a very similar agreement at one workplace. Fortunately, I had already been hired. Instead of flying into a rage and telling them to go to hell (first impulse) I responded with a list of modifications I wanted made to the agreement. Predictably, the issue fell into a black hole and was never heard from again. This company was a lot of fun to work for - just because some overzealous lawyer came up with this slave agreement didn't say much about the company. Of course, it's different when you deal with a big company that has a HR department and hiring procedures. Currently I contract through a reputable agency, and if the customer offered me anything to sign, I'd explain that my business relationship is with the agency, not them. I'm sure the agency has signed all kinds of NDA's, but they have lawyers to negotiate these things.

Wrong. We have every right to complain. Especially when failure to complain means the capture of ideas by corporations, the loss of freedom of control over your own past work, and the reigning-in of creative and communication. Contracts that demand control over your past work are going to be harmful to society at large even more than to the people who sign them: they merely suffer a pang of conscience, while the rest of us lose access to an idea. The unfettered circulation of ideas has synergistic benefits that are being scarcer and scarcer as employers continue the IP land-grab.

Your ideological motivation is to get rid of any regulation and make all relationships strictly contractual ones. There are hundreds of historical and hypothetical examples of negative consequences of this sort of system, but you'll just wave your hands and say "oh, if you're exceptional you'll get around that." It should be noted that exceptional people were able to get around slavery and feudalism, but this doesn't justify slavery or feudalism. The working conditions in societies that have implemented standards for workers and protections for employees are far superior to those that haven't (hey, you are free to bargain whatever deal you want to cut in Sierra Leone and Mexico. What's holding you back?)

Although there is some component to such an IP agreement that the company wants to own all that
you come up with when employed at the firm, another reason for incoming IP agreements is to
CTA (cover their ass's) when being sued by one of your former employer(s).

With this type of agreement in place, if a former employer sues the new employer for improper
acquisition of trade secrets, the new employer has a built in defense against punitive damages
by asserting that it didn't know you were carrying over trade secrets from your former
employer...

This way you get all the blame!

As for work done while employed, depending on where you live, there are quite a few restrictions
on what your employer has rights to. Basically, in the absence of a written agreement to the
contrary, for your employer to have rights to your ideas...

- Work must be done while employed.
- Work must be in area of business actively pursued by the company.

If you want to do some stuff on the side, in order to protect yourself...

1. Don't use employer's equipment (otherwize the argument could be made that you were employed,
even if it's on your own time)
2. Don't solicit customers who are current customers of your current employer (if they ask
you first fine, just don't solicit)
3. Don't solicit employees who are current employees of your current employer (if they ask
you first fine, just don't solicit). This includes asking for advice, consulting, etc...
4. Don't do side work with ideas related to what the company is also working on.
5. Quit before you do #2, #3, or #4
6. Write everything on the provided form, but give no details whatsoever, and get a signed copy
of the form... This preserves your rights to IP conceived before employment with their
acknowledgement. Turning the paper around and making them sign it let's them know you're
serious too... Also mention on the form that you have worked on proprietary stuff that cannot
be disclosed at this time, but you will inform the company if it starts working in that
area of any pending conflicts of interest. This give you a bit of wiggle room...

Also if you have any questions, don't sign anything before getting your concerns addressed in
writing... Managers and HR flunkies don't have any authority to modify these agreements so they
can't do anything in writing. You ususally need a VP or Officer to change anything so the
proprietary non-disclosure wiggle is a reasonable thing to assert if they give you any flack...

Companies are going to put themselves at a serious disadvantage by doing this. There are too many bad techies in this industry, and too few really good ones.

Employees happy to sign agreements of this nature are likely to:
a) have nothing worth declaring - either they don't have much experience or they don't hack for fun - treating their techie job strictly as a 9-to-5;
b) lie, or hide the truth - ideal people to have around if a project starts going wrong;
c) be in real need of a job - let's face it, many people are, and many have families, etc, to support - and unable to get one anywhere else.

The very sort of people they want to attract are going to be the first people to be put off by a contract like this.

At the end of the day, companies who do this are going to lose their competitive advantage to those which don't - companies more likely to get the best employees.

Do these companies really know what they're doing with clauses like these, or do they just consider them part of a "standard" contract ?

The only thing that you can do when you get this sort of agreement forced on you is to walk.

There are fairly standard employment agreements that cede rights to inventions that you make while working on a company's projects to the company. These are needed to protect the company from having you patent work that you did while in their employee. Anything more than this is shady business practice.

When you run into a company trying to do something like this you have to recognize that this company is not likely to treat it's employees with respect.

Actually his opinion is (more or less) the law. Work you do on your own time is yours, regardless of what the IP agreement claims. And there is no reason you have to divulge any prior IP work, nor do you have to tell them about any projects you work on on your own time during your employment.

This is not an opinion, it is law. IP contracts that contradict this are illegal and unenforcable. I still would rather not sign something like this, because it would give grounds for a lawsuit to determine whether the agreement was enforcable, and whether you were in violation of it, and I like to avoid lawsuits.

Second, "wasting" time rewriting software you have done at home is not fucking the company, if it your job. If you hadn't already written it, you would have to do so on the companies time anyway. Now, if they want to accept the license you released your code under (including restrictions about licensing modifications), and not have you redo the work, that is fine, but if they don't, they are fucking themselves.

On the other hand, you DO owe it to your company to 1) make them aware if there is freely available code you can work from, rather than reimplementing something, whether you wrote it or not, and 2) to make sure they are aware of the ownership/licensing restrictions of any free software you choose to modify or redistribute as part of your job.

Now, an entirely different issue is non-compete agreements. If, while employed by a company, you choose to work on something substantially related to your job, you would need to verify that you weren't violating your non-compete agreement. Since most non-compete agreements only seem to deal with commercial competition, as long as you don't sell or otherwise profit from your work, I bet you could slip through that loophole, but I imagine companies will be catching on and filling that one in, as well Non-compete agreements do not cover work you did before joining the company, though, and do not grant ownership of anything to the company.

If you used company resources (ie, your time) to modify a GPL program (written by you or someone else) without making it clear to you employer the restrictions placed on derived works, you are acting in bad faith. I believe the way this would work is that the company would still be bound by the GPL (since they don't own the code), but they could sue you for damages at least up to the value of the code they had to give away. Not sure on that, though.

Amen! The major hassle I hit while negotiating contracts is that too many other contractors are willing to sign away all of their rights without realizing what they are doing.

This isn't just supply and demand at work-- people who sign away more than they really can afford to are effectively selling their services below cost. A $20k dev. contract or even a $100k/yr job isn't worth exposing yourself to hundreds of thousands of dollars in lawsuit amd injunctions.

Companies push "standard" contracts because they have enough market force to push them on us. The only way to get back on top is to have the programmers push back with their own "standard" contract. This is sort of like EULA's vs. GPL. I fear that we're not having much success at organizing, however; the market is just so good right now that many people don't care about liability.

I kind of hope that in the future, these kinds of things can be assigned a financial values. After all, that's what keeps our civilization working smoothly instead of killing each other over disagreements. So if a company wants my urine, they should make an offer. If it's high enough, I probably don't mind. Same principle applies to employees running Napster at work and sucking up all the bandwidth. The company needs to negotiate a rate at which they sell personal bandwidth to employees. But then I think the whole notion of employment, with it's "job security", paternalism, and tribalism is ridiculous and needs to be phased out.

I take it you don't work as a software developer, and haven't been on the receiving end of legal bullying tactics in this area.

The reality of these agreements is far, far from their apparent legal intent. The reality is that companies who are concerned about IP in this way ant just one thing in practice: to maximize their ability to have an apparently solid basis for lawsuits, in order to be able to gain injunctions and other "remedies" against parties which are capable of competing with them. On the surface, this might seem reasonable, but in practice, such claims are often very unsound, and could often be successfully challenged in court. However, employees and ex-employees typically do not have the financial and legal resources to fight such cases. As a result, what companies really gain by these agreements is a strategic edge in the game of "my overall legal position is stronger than yours", which allows them to bully ex-employees into not doing anything even remotely close to competing with them, and in some cases not even pursuing ideas that the employee had prior to joining that company.

Also, as to your assertion that most of what programmers do doesn't qualify as "invention", try telling that to the Patent Office! Unfortunately, the legal environment is currently such that you can get a patent for many, many things that to any reasonable person, should not qualify as an invention. As such, it is dangerous to sign away rights when in fact, your dumb idea about using a single button-click to place an order on a website could in fact be incredibly valuable IP, in this distorted Kafkaesque world of VC-funded rich thugs with lawyers.

I think you should have a written agreement describing the terms under which you accept the equipment. Either:

Use of the equipment is part of your compensation. Your only responsibility is to return the equipment in good condition when the company requests it.

The company is co-locating the equipment in your dwelling in order to further their business goals. It is to be used only for company business. The company will pay an appropriate colocation fee every month to cover the space and power consumed, cooling cost, and liability. Colocation is not cheap - if you're going to offer it for less than the market, you should have some clear idea of why you can afford this.

Of course, most companies won't go for either of these ideas. They want you to pay the cost of housing the gear, while they get the benefits. So we're back at square one - you're better off saying "NO" to this type of deal.

Rule 1: Some people are good at some things.
Rule 2: Not all people are good at all things.
Rule 3: Clint Eastwood said "A man's got to know his limitations".
Get expert advice if it's important. If you're installing a switch in a network, you'll ask an expert. I have a CPA I trust to do my taxes, I have an auto mechanic I trust not to gouge me when fixing my cars, I have an agent for my book cotnract negotiations, I have an attorney I trust to have my interests in mind when I ask for advice because I'm not as good at what they do as they are, and I acknowledge that.

If you're signing a legal document, get advice from a lawyer. If they won't let you get legal advice before signing (as in claiming the document is "company proprietary" or some similar excuse, they may well be sneaking something into the document you wouldn't like.

When a company was trying to hire me a short while back, I was handed a several-page IP agreement at a company that wanted me, that required me to list everything I'd ever done, and that any innovations, to prior work or not, done during my time of employment, whether on or off worktime, belonged to the company. Their attitude (it was a small and privately owned, but very well known Java development shop) was they'd "been burned" in a previous business by one of their guys leaving & stealing everything, so they were just protecting themselves. This agreement was significantly farther-reaching than I felt comfortable with, and was one of the several reasons I became convinced I was dealing with untrustworthy and unethical people - we parted ways shortly thereafter.

One thing I have found is that many corporations tend to avoid wanting to hire or do business with those who have a strong knowledge of their rights and the laws regarding those rights. Part of that is fear they will be sued, even if improperly. I recall the case from California of the lawyer who was denied the right to purchase a condominium (I believe it was) simply because he was a lawyer, and that lawyers tend to sue the sellers (who probably are also lawyers) more than the average person would.

Part of the problem is poorly written law. There are many cases of improper lawsuits. But there are also many cases where proper lawsuits get tossed out because the law doesn't allow them (legally tossed out, but not right). OTOH, legislaters tend to dislike being too specific when they write law. I tend to think they are mostly incompetent at writing law.

Anyway, showing your knowledge of law and rights could very well be a turn off to employers and corporations. But then, they do tend to see most people as suckers. Maybe if you become and independent corp-to-corp contractor, you'd be in a better position to negotiate these things, and on your own terms. Just wondering.

Most of these IP agreements imply that you are dedicating your efforts to the firm. If your goal is to earn a living while working on the ultimate open source X, then you and your employer probably don't have a meeting of minds: are you being hiring for working hours (sorta consulting), or for inventing things for the firm? The former is worth about half of the latter: do you and the firm agree on what you role/responsibility is?

My current employment agreement gives all my work to my employer: this is fine by me... I'm expected to be working for the firm's benefit whenever I write commercial code, and the firm compensates me very well for this. I'll consult the firm's lawyers before I release any GPL code.

My previous employment agreement said something like: "I warrant myself to be an expert in the following specific areas. I'll work on your stuff full-time. If I leave, I keep my brain contents, I take no physical stuff. I'm an expert, I've thought about most things: if you have a specific idea, I'll sign a non-disclosure concerning it. If your idea was already published, I'm free to reuse it."

At my first job, management tried to make everyone sign their invention rights away "in exchange for future compensation and employment." I refused to sign: when the president eventually demanded I sign, I pointed out that he could fire me without cause anyway: fire me or go away. I never heard anything about it again.

Don't be afraid to explain that you know about a lot of stuff, and will continue to learn more. A lawyer wouldn't sign over the rights to her incremental general knowledge gained for working on a specific case. Why should they expect you to? Note that this is not the same as specific knowledge about the case: this is a reasonable area for non-disclosure.

How? What if the only field in which you are trained relies on a standard encumbered by patents, and your competitors refuse to license? What if the only field in which you are trained requires an eight-figure investment just to get started? Would you go back to school for four more years (at a cost of USD $100,000+) just to get a job?

"If, at any time, the employer wishes to usurp the inventions of the employee, and wishes to exploit the revenues secured by said invention of said employee, then the employee is entitled to three (3) swings at the CEO with a Louisville Slugger or a Rawlings Pro-Core. No aluminum bats shall be used in the swinging process."

The company wants to gain all of your existing skills (that you gained from prior work at other companies) but they don't want you gaining any of their skills (that they gained from prior work by other employees). I think their lawyer considers the latter almost theft. They want take without give. Moreover they think it's possible to separate your experiences prior to working with them from experiences while working for them if you decide to leave.

This is what (mindless) competition does in the marketplace. Companies are like countries at war. These businesses are fighting over who gets to supply a limited marketplace with (near identical?) products. Staff that leave one company and try to work at another in the same industry are treated like traitors. This can not be good for society.

This agreement seems fair. Clearly, a company needs to own all of the source code behind their product. They can't worry about a disgruntled ex-employee suddenly demanding that they pay royalties for 'his code' or any other things that might pop up.

If the company expects you to bring previously developed code to the job (as they seem to in this case) then they should be paying licence fees, or purchasing the rights to the code from you. Salaray or wages are not compensation for work you've done previously.

Just sit down and write the code from scratch. Even if you're doing basically exactly the same thing you've done before. If you get a job at another company doing the exact same thing, rewrite it from scratch
again.

It not only protects the company, it protects you from any ex-employers.

Doing it that way is a breach of "clean room" practices, and won't save you from any ex-employers, because you've seen the old code. Employers just have to stop trying to grab rights to this sort of generic code which has nothing to do with their business logic. They want to take something from you for nothing, which is clearly not fair.

Really the only way to avoid getting into trouble with these sorts of employment contracts these days is to only ever work for one company.

Clearly, a company needs to own all of the source code behind their product. They can't worry about a disgruntled ex-employee suddenly demanding that they pay royalties for 'his code' or any other things that might pop up.

If 'his code' is licensed under X11, BSD, or Lesser GPL terms, such a license is irrevocable, and the "submarine" tactic you're proposing is not possible.

I've actually had to think about these issues quite a bit lately, for reasons I'm not comfortable disclosing, so I have a few observations that others might find interesting:

In the most general sense, claims regarding specific inventions in which the employer was not involved (e.g. prior to employment) are not enforceable even if they're in the employee agreement.

However, it can be more difficult than you might expect to prove that a specific invention was in your possession prior to employment. If you don't have something written down and in the possession of people you can count on to testify as to its provenance, you're on dangerous ground.

Ideas tend to get entangled with one another. Even if you can prove ownership of one invention, the employer might come at you with claims regarding related or secondary inventions. The burden of disentanglement will be yours, and a sufficiently determined employer can sometimes rule out all possible expressions or means of implementation even while ceding ownership of the core invention to you.

Beware the "doctrine of negative knowledge". This is the idea that, when you try to do something, you quickly find out many wrong ways to do it; this is called negative knowledge, and it is the property of your employer in the eyes of most courts. Jeff Merkey of Timpanogas Research Group [timpanogas.com] is a well-known victim of this doctrine, and Novell vs. Timpanogas is a case with which anyone interested in intellectual-property law should be familiar.

In short, then, you can often win a battle over an invention but still end up losing the war. If you think you might ever want to work on something on your own that is in any way related to what you do at your job, make damn sure you know exactly where you stand with regard to these issues.

Congratulation: you have bought into every myth and lie that right-wing propogandists have ever spread about unions. I see that you read Reader's Digest regularly and believe that each and every article there is the truth, the whole truth, and only the truth.

I would fill you in with facts, such as the fact that most states nowdays have laws prohibiting closed shops and forced strikes, etc., but obviously your mind is already made up. I just wish you'd cite sources for your right-wing propoganda, instead of doing a Rush Limbaugh and just pulling them out of your ass.

It is bizarre that it's okay for investors to get together into a group and form an association called a "company", with all the aggregation of power and money that this implies, but it's not okay for workers to get together and form an association called a "union". It seems to me that freedom of association is one of the more vital rights granted by our Constitution. If you dislike the behavior of some of these associations, well, I dislike the behavior of some of our major corporations too, such as Intel's habit of firing anybody over age 40 because they're "too expensive and too old" (note that age discrimination laws do NOT apply to 40-year-olds, they're violating no laws, but that does not mean it's ethical or right), and Nike's bad habit of contracting with companies that use slave labor or child labor to build shoes.

When it came right down to it, my list of "inventions" looked pretty meager. These "inventions" are not really inventions at all, but rather extensions and adaptations of publicly available software. Using the word "invention" to refer to such extensions is unfortunate; it is an attempt to impose an ownership structure onto software ideas, and contradicts my experience of how software development really works.

One of your civil rights is the right to practice your trade, unless you are breaking the law while doing it. Just because a stupid law comes up that interferes with your trade, doesn't mean your rights aren't being violated either.

Just because corporations would like to change the way most software gets developed does not mean they can hamper the intellectual inquiries of individual software developers in order to glean off every iota of their creativity.

Not free speech case- civil rights case. Try litigation under this approach. Or, does anyone know if such civil rights approaches have worked with intellectual property cases?

You should have done a better job using your leverage. You should have gone through with the interview and then let him decide if he wanted to have you as an employee. At that point, you would have greater negotiating power, and may have been able to convince him that he should hire you with a modified NDA.

"Exclusive" means you are the only one having this right. Which is not the case if you released the work under the GPL: any Joe can download your code and make derivative works of it... as long that work complies to the GPL. So, even if the company forces you to sign over all copyrights, they cannot "unfree" existing versions of the software. The only thing they can do is prevent you from releasing new versions under the GPL, but any other author can take your last free version, and fork the code! Conceivably, you yourself could even pick up at your last free version after you left the company.

This sounds like a very union-esque concept. and, perhaps, it is. But i can't stress enough the fact that if every employee of a company fails to sign an
agreement (to do|not to do) X, then there's nothing the company can do. They can threaten all they want, they may even fire one or two people just to show
how sharp their sword is. But, at the end of the day, the company will be forced to scrap the agreement

[..]

Well I think this is only possible because you`re talking about the IT & software sector. People can excercise a certain pressure on the company because IT companies have trouble in getting people, and then keeping them. Good people are hard to find and companies try to trade benefits, collegiality, respect and responsabilities for additional time withing the company, while trying to limit the interest of their employees in other areas/markets/companies. IT people are indeed scarce thes days, but I suspect this situation will end in maybe 5 to 8 years. So while it might be opportune to go job-(s)hopping now, it can`t hurt to try and build a more depending relationship with your company while you still can get the most benefits out of it. They won`t be as willing to render you some benefits once the booming is over.

Personally I don`t like that strategy one bit either, but I`m afraid that`s the way it`s supposed to go. I`m not really an IT-er (more interested in the science part of things) so this doesn`t really apply to me.

(a big consulting firm, btw), they sent me a form letter reminding me that any "inventions, novel ideas, recipes, designs, concepts and business models" I had developed during my time there belonged to them, and that they would protect their property yadeyadeyade.
I wrote back and said I had come up with a pretty cool recipe for chocolate cake, and the only novel ideas I had developed involved Irene in accounting; I had come up with a business model for a company that doesn't treat its staff like thieves, and my designs could be found on the borders of the notes of the interminable meetings I had forced to sit through. It wasn't very mature, but it made me feel a bit better....
Oh, and Irene from accounting actually emailed me 2 days later.
P

I just recently signed a pretty much identical agreement at my company.

Why? Because I live and work in California; and the agreement also specifically quoted this section of the California Labor Code:

Any provision in an employment agreement which provides that an employee shall assign or offer to assign any of his or her rights in an invention to his or her employer shall not apply to an Invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, and (a) which does not relate (1) to the business of the employer, or (2) to the employer's actual of demonstrably anticipated research or development, or (b) which does not result from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable.

IANAL, but the langauge seems simple enough to me: If I didn't use any "trade secrets" of my employer's, didn't use any of their resources to invent it, and it didn't result from something I did for them (was paid to do) - they don't have the right to it - even if I sign a statement saying they do.

Before I begin work and sign at a new company, I assign all property rights to my Mother. Yup, good ole Mom.

So on paper, she has an *exclusive* license to the property. She can license, sell, assign, etc atany time. I can't sell my own code without herpermission. However, I can revoke her license to these properties at any time, but only in writing.

This agreement includes a very broad disclosure of 'properties of interest'. The 'properties' range from mere ideas to actual programs. Obviously, these sorts of disclosures and contracts should never contain trade secret info.

This agreement came up 6 months into my employment with a certain large and litigious e-commerce company.

A few months before I started working, I documented a decent internet business idea. BTW, I get paid for engineering, not business ideas.

Six months into my employment, I went up the channels to see if we could make use of this idea.
Of course, I ended up in legal.

They weren't very cooperative, mainly because they they thought they had me by the balls. They basically wanted me to just give them the idea (since I "couldn't do anything else with it anyway")..

Knowing that wasn't going to happen and that the discussion was going to go nowhere, I told them that I'd already assigned all rights to the idea to my Mom for safe keeping prior to my start date.
And she could sell to anyone.

At that point, the VP of legal became very aggitated and asked her patent clerk/ip-guy if he knew anything about that. He did not. They decided that they were 'very exposed' and ended the meeting. They didn't really want to talk to me much after that.

> do you have the right to include *any* gpl'd code in a company project?

Depends on exactly how it is included, and what the company does with it. Included a piece of GPL'ed code in company software, then releasing that software to the world as a binary-only product is a no-no. It is ok in the following cases:

if it is purely for in-house use.

If source is relased.

If the GPL'ed program is included in its entirety as a separate unit, without any modifications. For instance, if you supply a Java Application Server running on Unix, you are free to include bash in its distribution to faciliate running the install scripts. However, you cannot rip out pieces of bash, and incorporate them into the application server executable itself. Likewise, you may link your app against LGPL'ed libraries.

Everything is ok if it is your own code (even a binary-only distribution), in that case you just grant your company a different license (as the author, you have the right to distribute your code under any license you see fit, even conflicting ones). Conceivably, you could release the same code under GPL, BSD and a proprietary license. You are the author, you can release your code under whichever terms you want. However, somebody who is not the author may have trouble combining two pieces together if one is GPL (mandatory source disclosure) and the other is proprietary (NDA forbids source disclosure).

Again, you failed to actually READ the definition of "engineer". Nowhere in the definition does it say that to be an engineer one must hold an engineering degree. FYI, at UNM (and most other schools I've seen) CompSci is part of the College/Department of Engineering

Speaking as someone who DOES have an engineering degree, I do find it mildly annoying that just about anyone can call themselves an "engineer" without the credentials to back them up. (particuarly when the "engineer" part is prefixed with "microsoft certified") But it's only a mild annoyance -- anyone with half a clue can tell the difference between a real engineer and a wannabe. Titles are only good for impressing the clueless.

Just because you created a program to manage a linked list doesn't qualify it as an invention unless your implementation was sufficiently novel that you could patent it (and then demand license fees from others to use it).
Are you not a regular/. reader? You can't swing a cat without hitting a moronic patent' story nowadays. If that's the definition of an invention, then Novalogic invented voxels.

If a potential employer wants any rights in anything you do that is not done on their time and won't remove such a clause, then you need to Run Away, Run Away!. Even if they do remove it for you, you might be working with other people for whom they have not. Even then it could be a very bad situation.

I do think an employer has a right to make sure you are not stealing their ideas (including those they have paid you to create for them) for your own private benefit. A mechanism for them to be confident you are not doing that is something you and they will have to agree on. Be sure to agree on it in advance. Maybe sure your entire agreement is concluded all at once as they may no longer be interested once you have agreed to their terms and are trying to negotiate your terms afterwards.

My current employer wanted me to sign a contract which included an IP agreement. A few things looked fishy so I sent it to an attorney. He tore it to pieces. Basically it was full of clauses which gave the company ownership of anything I develop during my employment, regardless of scope and whether or not I developed it on my own time. Technically it would have given them ownership of any music I write (I develop web software when I'm not composing). There was also a ridiculous non-compete clause with a several year term following termination of employment and a clause which said that if the company sues me for breach of the non-compete, and a judge throws out their suit, I still have to pay them half of any revenues generated by my alleged breach. By the time I got done fighting with the employer's legal department the contract had doubled in length and I got all kinds of stuff added to protect me. They still use the same standard contract for new hires, even though most of the techies who are asked to sign it refuse to do so without modification.

What i want to emphasise is that from 1) they got a really big red sign, so when 2) came they didn't try hard to force the issue.

<RANT>
It's always a pleasure to see management finaly come to the conclusion that contrary to popular belief, it's not the employees that are easily discardable for companies, it's the other way around - companies are easily discardable for employees
</RANT>